Appeal No. 1996-1942 15
Application No. 07/977,834
Furthermore, it is clear from the teachings of Ruus that the microencapsulated adhesives
function as in the manner required by the claimed subject matter. They are non-tacky
until the application of external force. Accordingly, we find that the teachings of Ruus
are sufficient to establish a prima facie case of obviousness with respect to independent
claim 21.
As to the rejection of claim 25, wherein the examiner relies upon a reference to
Dahm for its teaching of polyurea containing walls, we adopt the position of the examiner
as stated in the Answer on pages 9 and 10.
Finally, as to those rejections relying on the secondary reference to
Ozono, we rely on Ruus alone. In the discussion of each of the above rejections over
Ruus, the dispositive issue is whether appellant has had a fair opportunity to react to the
thrust of the rejection. Kronig, 539 F.2d at 1302-03, 190 USPQ at 426-27. Limiting
the discussion to the evidence contained in Ruus alone does not constitute a new ground
of rejection. See Kronig, 539 F.2d at 1303, 190 USPQ at 427; Bush, supra.
Decision
The rejection of claims 1 through 8 and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Sawai in view of Ozono is reversed.
The rejection of claims 21 through 24 under 35 U.S.C. § 103(a) as being
unpatentable over Sawai in view of Ozono is affirmed.
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